Carlos Alberto Vives Restrepo v. WSJ Trade / Wilman Villegas

Case No. D2015-0919

1. The Parties

The Respondent is WSJ Trade and Wilman Villegas of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cumbiahouse.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2015. On July 2, 2015, the Respondent submitted an informal email communication.

The Center appointed Dr. Luca Barbero as the sole panelist in this matter on July 9, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of the Colombian trademark registration No. 461662 for CUMBIA HOUSE (figurative mark), granted on November 21, 2012, in class 43 for “restaurant services”.

The disputed domain name was registered on January 25, 2013 and has been pointed to a pay-per-click landing page, where a banner states that the disputed domain name is offered for sale for USD 1,199.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <cumbiahouse.com> is confusingly similar to its registered trademark since the term “cumbiahouse” is substantially identical to the trademark CUMBIA HOUSE in terms of appearance, sound, likeness and impact and the “.com” suffix is not sufficient to differentiate the disputed domain name from the Complainant’s trademark.

With reference to the Respondent’s rights or legitimate interest in the disputed domain name, the Complainant states that the Respondent is not known by a name consisting in whole or in part of the trademark CUMBIA HOUSE or of a substantial equivalent.

The Complainant asserts that the Respondent has no authorization to use the trademark CUMBIA HOUSE in the disputed domain name and that the Respondent is not an agent or licensee of the Complainant.

The Complainant highlights that the Respondent is redirecting the disputed domain name to a pay-per-click web site featuring paid advertisement linking to providers of restaurant related services which directly compete with the Complainant’s business. The Complainant further underlines that the links published on the Respondent’s web site show references to Colombian cities such as Bogota and Cartagena, and to Colombia itself, thus associating the disputed domain name with the Complainant’s registered trademark in Colombia.

The Complainant submits that the Respondent likely generates click-through revenues from these links and observes that, when paid advertisement links on a pay-per-click web site are based on the trademark value, the trend in UDRP decisions is to recognize that such practice generally constitutes an abusive conduct and an illegitimate use of the domain name.

The Complainant asserts that the Respondent is using the disputed domain name and the Complainant’s trademark to attract users to its web site for illegitimate revenue purposes, out of the Complainant’s brand value. The Complainant thus concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Complainant submits that the Respondent was certainly aware of the Complainant and its rights in the trademark CUMBIA HOUSE at the time of the registration, since there is no other possible explanation for the use of the mark in the disputed domain name and its redirection to a pay-per-click web site providing links to third party sites with potential competing goods or sevices.

The Complainant states that the Respondent has used the disputed domain name to intentionally attempt to attract Internet users to its web site by capitalizing on the value of the trademark CUMBIA HOUSE.

As an additional circumstance evidencing the Respondent’s bad faith, the Complainant highlights that the Respondent is offering the disputed domain name for sale for USD 1,199.

B. Respondent

The Respondent did not submit a formal Response.

After the notification of the Respondent’s default, however, it submitted an email communication in which it stated that it invests in generic domain names, alleging that “Cumbia House” is a generic domain name. It also states that a trademark CUMBIA HOUSE was abandoned in 2007.

The Respondent concludes stating that is available to transfer the disputed domain name to anyone who can pay the amount of USD 4,000.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Preliminary issue: Respondent’s informal email sent after the notification of the Respondent’s default

The Panel has to decide whether to take the Respondent’s email of July 2, 2015 into consideration, even though it was sent after the end of the period for filing the Response.

Paragraph 5(e) of the Rules provides that "at the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response". In addition, the general power of the Panel to extend time limits in paragraph 10(c) of the Rules is exercisable only in "exceptional cases".

In the case at hand, the Panel notes that the Respondent has not requested an extension of the period of time for the filing of the response and that, anyway, there are no exceptional circumstances that could justify an extension of the time limits. In particular, there is no reason to believe that the Respondent did not have a fair opportunity to file its response within the due date for Response. See, along these lines, Nike, Inc. v. Crystal International,
WIPO Case No. D2001-0102.

However, in exercising its discretion to conduct the administrative proceeding in such manner as it considers appropriate and ensure that the parties are treated with equality and that each Party is given a fair opportunity to present its case according to paragraphs 10 (a) and (b) of the Rules, the Panel has examined also the allegations of the Respondent and finds that they do not prejudice the Complainant or affect the outcome of this case. To the contrary, the Panel finds that the Respondent’s statements corroborate the Panel’s findings in favor of the Complainant.

B. Identical or Confusingly Similar

The Complainant has provided evidence of an active Colombian trademark registration for the figurative mark CUMBIA HOUSE.

As stated in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the first element of the UDRP serves essentially as a standing requirement and involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. According to paragraph 1.11 of the WIPO Overview 2.0, since figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall.

In the case at hand, the Panel finds that the Complainant has satisfied its burden of proving that the disputed domain name is identical or confusingly similar to a trademark in which it has established rights, since the two words “cumbia house” are the prominent part of both the Complainant’s trademark and the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393; Accor v. Eren Atesmen,
WIPO Case No. D2009-0701).

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.

The Panel notes that there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark or to register the disputed domain name.

In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name or have used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.

The Panel is also satisfied that the pointing of the disputed domain name, confusingly similar to the Complainant’s trademark, to a parking page with pay-per-click links for competing services, where the disputed domain name is also offered for sale, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

In light of the Complainant’s prior registration and use of the trademark CUMBIA HOUSE, of the Respondent’s redirection of the disputed domain name to a pay-per-click page with sponsored links relating also to Colombia, where the Complainant is based, and in the absence of evidence that “cumbia house” might actually be a generic expression as alleged by the Respondent (noting that in any event the combination of allegedly generic words may nonetheless form a new, distinctive term; see Cooperativa Central de Crédito de Minas Gerais Ltda - Sicoob Central Crediminas v. Tradeal.com,
WIPO Case No. D2012-2356), the Panel finds that the registration of the disputed domain name, confusingly similar to the Complainant’s trademark, cannot be ascribed to a mere coincidence.

Moreover, since the Respondent appears to operate in the field of domain names, as it mentioned that it is a domain investor, the Panel finds that the Respondent’s registration amounts to bad faith due to the fact that a search on the Internet at that time would have likely highlighted the Complainant’s distinctive sign. As indicated in paragraph 3.4 of the WIPO Overview 2.0, especially where a respondent is a professional domain name registrant, “it must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches”.

As to the use of the disputed domain name, the Panel notes that the Respondent has pointed it to a web site featuring pay-per-click links redirecting to third party commercial web sites. Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has intentionally attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its web site and of the web sites linked thereto.

As an additional circumstance of bad faith, the evidence on records shows that the Respondent has offered the disputed domain name for sale (for USD 1,199 and USD 4,000) which are certainly well over the out-of-pocket costs directly related to the disputed domain name.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cumbiahouse.com> be transferred to the Complainant.